Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Birgit Clark, Merpel, Jeremy Phillips, Eleonora Rosati, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here

For the half-year to 30 June 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Suleman Ali, Tom Ohta and Valentina Torelli.

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Tuesday, 12 May 2009

The IPKat recently reported (see the IPKat's post of 23 April 2009 here) about a 'curious' press release by Office for Harmonisation in the Internal Market's (OHIM) concerning an OBAMA trade mark on the Community trade mark register ("You may have seen that there has been an EFE story that OHIM has registered "OBAMA" as a Community trade mark. This is not correct - there has just been an application at present. In case you are interested here is our statement").

A quick check of some national trade mark registers revealed that OBAMA marks can be found on several (European) trade mark registers. There are, for example, currently eight pending OBAMA trade mark applications in different permutations reflecting Mr. Obama's popularity on the German trade mark register: "Obama-Fingers" covering class 29, "Mrs. Obama" and "First Lady Obama" both covering classes 3, 32, 33 are just three examples. The earliest of these German trade mark applications, German trade mark application No. 302008048873.5 Obama covering class 33, was already filed on 28 July 2008, just days after Mr. Obama's famous "Berlin Speech" (see also Class 46's post here)

However, in contrast to the OHIM, the German Patent and Trademark Office (DMPA) had not published any statements concerning "Obama" trade marks. Reason enough for this Kat to enquire and the IPKat is pleasantly surprised that the DPMA has now replied (in English). Please find the DPMA's statement below, which does in fact tell us very little but which is nonetheless interesting, particularly when compared to the OHIM's earlier statement (here):

"Several application procedures are pending at the DPMA that refer to US President Obama, his wife or his family.

This relation is most clearly shown in the case of eleven applications which apply for the registration of the complete surname 'Obama' or 'OBAMA' either as sole trade mark word or as an element of the trade mark applied for (such as 'Mrs. Obama', 'First Lady Obama', 'FIRST FAMILY OBAMA', 'Obama Fingers'). Three of these applications are deemed withdrawn, because the respective applicants did not pay the application fees. The remaining eight procedures are not yet concluded.

Please understand that the DPMA is currently not in a position to provide information on these cases. Within the scope of these procedures it will have to be examined, above all, whether the signs applied for have the distinctive character that is required for registration in the trade mark register, whether they describe the goods and services claimed in a concrete and direct manner or whether the applications might have to be considered as having been filed in bad faith.

Other applications relate to signs such as 'MR. PRESIDENT O' or the slogan 'Yes we can' in different spellings, combinations and variations (including 'YES WE CANdy'). In most of these cases, examination is not yet completed."

The IPKat says 'Dankeschön' to Dr. Stephanie Krüger of the DPMA's Press Office in Munich, while Merpel contemplates whether she should file a (German) trade mark application for YES WE KAT....

Having seen so many OBAMA souvenirs in Washington, it would seem that OBAMA should not be monopolized to one souvenir trader. As to bad faith, the CTMR does not foresee it as an absolute ground for refusal, but as an absolute ground for invalidity (after registration), contrary to German law.